Ex Parte Disantis

Patent Trial and Appeal Board

Dec 19, 2018

13799584 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/799,584 03/13/2013
27885 7590 12/20/2018
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Raymond Disantis
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
NTSC 200002US01 3899
EXAMINER
DONG,LIANG
Cleveland, OH 44115 ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
12/20/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND DIS ANTIS 1
Appeal2018-003040
Application 13/799,584
Technology Center 3700
Before KEVIN F. TURNER, DANIELS. SONG, and
ARTHUR M. PESLAK, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1-18 and 21-23 in the
present application (Br. 3). We have jurisdiction under 35 U.S.C. §§ 6(b)
and 134(a).
We AFFIRM.
1 The Appellant identifies the real party in interest as The National
Telephone Supply Company (Appeal Brief ("Br.") 1 ).
Appeal2018-003040
Application 13/799,584
The claimed invention is directed to a hand held cable cutter (Title,
Abstract). Independent claim 1 illustrative of the invention reads as follows
(Br. 13-14, Claims App'x):
1. A hand held cable cutter comprising:
a first cutter half having a first cutting head with a first jaw
having a first cutting edge formed on a first cutting blade of said
first jaw;
a first pivot portion formed in said first cutting head;
a second cutter half having a second cutting head with a
second jaw having a second cutting edge formed on a first cutting
blade of said second jaw;
wherein said first cutter half and said second cutter half
each has integrated open and close positive stop surfaces formed
as part of each of said first and second cutting heads near a rear
portion of each of said first and second cutting heads, wherein
said open stop surfaces comprise a curved angled portion formed
by a peripheral edge of one of said first and second cutting heads
and a straight angled portion formed by a peripheral edge of one
of said first and second cutting heads, wherein said close stop
surfaces each comprise a curved portion wherein one of said
close stop surfaces rotates into abutment with said other of said
close stop surfaces as said cutter halves are rotated to a fully
closed position, wherein each of said open stop surfaces and each
of said close stop surface protrudes inwardly from an outermost
peripheral edge of each of said first and second cutting blades,
wherein said open stop surfaces contact each other to fully limit
movement in a fully open position and said close stop surfaces
contact each other to fully limit movement in a fully closed
position;
a second pivot portion formed in said second cutting head;
and
wherein said first jaw has a cutting profile formed between
said first pivot portion and said first cutting edge of said first
cutting blade and a root formed between a second cutting edge
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Appeal2018-003040
Application 13/799,584
of said first cutting blade and said first pivot portion, wherein
said second jaw has a cutting profile formed between said second
pivot portion and said first cutting edge of said second cutting
blade and a root formed between a second cutting edge of said
second cutting blade and said second pivot portion;
wherein said root and cutting profile of said first jaw and
said root and cutting profile of said second jaw form an overlap
between said first and second cutter blades when said cutter is in
a closed position.
Independent claim 21 is similar, reciting that the close stop surfaces
extend inwardly, but does not recite that the integrated open stop surfaces
extend inwardly (Br. 17-18, Claims App'x).
REJECTIONS 2
1. The Examiner rejects claims 1-18 and 21-23 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
2. The Examiner rejects claims 1-18 and 21-23 under 35 U.S.C.
§ 112(b) as being indefinite.
The Examiner also rejects various claims under 35 U.S.C. § 103 as
follows:
2 The Examiner's the Answer (Ans. 2) merely lists those rejections set forth
in the Appellant's Appeal Brief(Br. 3, 8), which is incomplete. We
understand the present status of the rejections to be as set forth in the Final
Office Action as listed herein. In that regard, the Examiner's rejection of all
the claims based on the combination of Wilhelm, Habib, and Farrell as set
forth in pages 6-22 of the Final Office Action are deemed to have been
withdrawn, while the rejection based on the combination of Wilhelm and
Farrell "on page 23-37 [of the Final Office Action] remain to be the
rejection for appeals [sic]." (Ans. 2).
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Appeal2018-003040
Application 13/799,584
3. Claims 1, 3-8, and 21-23 as obvious over Wilhelm (DE
19506457 Al, pub. Aug. 29, 1996) in view of Farrell (US 2009/0188351
Al, pub. July 30, 2009).
4. Claim 2 as obvious over Wilhelm in view of Farrell and
Greenlee (750 Cable Cutter, Greenlee Textron (2001)).
5. Claim 9 as obvious over Wilhelm in view of Farrell and Porter
(US 3,872,528, iss. Mar. 25, 1975).
6. Claims 10, 11, 14, and 15 as obvious over Wilhelm in view of
Farrell and Hagemeyer (Industrial Products Catalog, Hagemeyer North
America, 363 (2010-11)).
7. Claims 12 and 13 as obvious over Wilhelm in view of Farrell
and Troxel (US 4,229,881, iss. Oct. 28, 1980).
8. Claims 16 and 17 as obvious over Wilhelm in view of Farrell
and Bethune (US 2,794,250, iss. June 4, 1957).
9. Claim 18 as obvious over Wilhelm in view of Farrell and
Rennsteig Tools (Cable Shears D20 (2011)).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
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Appeal2018-003040
Application 13/799,584
As noted above, each of claims 1-18 and 21-23 have been rejected
under 35 U.S.C. § 112 for failing to comply with the written description
requirement and for indefiniteness under Rejections 1 and 2, respectively
(Final Act. 4--5). The Appellant does not submit any arguments in its
Appeal Brief as to these rejections based on written description and
indefiniteness. 3 Accordingly, Rejections 1 and 2 are summarily affirmed.
To be clear, as to Rejection 2, the Examiner rejects independent
claims 1 and 21 as being indefinite stating:
it is unclear what structure is required for "protrudes inwardly
form [sic] an outermost peripheral edge", it would appear that
the applicant is trying to describe a recess on the peripheral edge,
however the whole peripheral edge is curved ( as show in Figure
4 of the application), so any "recess/concave part" would be
consider[ ed] part of the peripheral edge/boundary and any
change to the curved edge would become the peripheral edge,
therefore you cannot have an inward protrusion. Also it seems
that only 60 and 50 are kind of a "recess", and 62 and 52 are not.
(Final Act. 5).
In Rejection 2, the Examiner also states:
it is unclear which stop is the limitation is referring to, there are
four close stops (two set of 60, 62) and four open stop (two set
of 50, 52) in the device, as an example the close stop (60 of the
first cutting head) and the close stop ( 62 of the first cutting head)
cannot ever come in contact.
(Final Act. 5---6).
3 As the Appeal Brief notes (Br. 4 ), an Amendment After Final was filed
July 7, 201 7 seeking to further amend the claims, but this amendment was
not entered (see Advisory Action dated July 20, 2017).
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Appeal2018-003040
Application 13/799,584
Rejection 2 also rejects, as being indefinite, the remaining claims 2-
18, 22, and 23, which ultimately depend from independent claims 1 or 21
(Final Act. 5).
Before reviewing the prior art Rejections 3-9 under 35 U.S.C. § 103,
"it is essential to know what the claims do in fact cover." In re Steele, 305
F.2d 859, 862 (CCPA 1962). Accordingly, because the claims fail to satisfy
the requirements of 35 U.S.C. § 112(b), we are constrained to reverse,pro
forma, the prior art Rejections 3-9 because they necessarily are based on
speculative assumptions as to the scope of the claims. See In re Steele, 305
F .2d at 862---63 (holding that the Board erred in affirming a rejection of
indefinite claims because the rejection was based on speculative assumptions
as to the meaning of the claims). It should be understood, however, that our
decision in this regard is based solely on the indefiniteness of the claimed
subject matter and does not reflect the adequacy of the prior art evidence
applied in support of these art rejections under§ 103.
CONCLUSIONS
1. Rejections 1 and 2 of claims 1-18 and 21-23 are summarily
AFFIRMED.
2. Rejections 3-9 are REVERSED, proforma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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